It was discovered in a Monday court filing from Samsung that the U.S. Patent and Trademark Office tentatively invalidated Apple's bounce scroll, or "rubber-banding," patent, possibly putting the Apple v. Samsung jury's decision regarding the property at risk.

First reported by FOSS Patent's Florian Mueller, the filing notes that the USPTO invalidated all claims of Apple's U.S. Patent No. 7,469,381, including two rejections on claim 19 which was successfully asserted against Samsung in the companies' high-profile California trial.

From the USPTO's examination:

Rejections:

The following rejections are utilized by the Examiner below, referencing the proposed prior art listed on pages 23-85 of the Request:

Rejection D: Claims 1-5, 7-13, and 15-20 as being anticipated by Ording

Samsung points out in its statement to Judge Lucy Koh that the USPTO published the finding on its website on Oct. 22, following an ex parte examination of the patent. It was reported in May that an anonymous request to reexamine the '381 patent, along with Apple's U.S. Patent No. 7,479,949 for touchscreen heuristics. At the time, it was thought that Android maker Google lodged the request, however it could have been any number of rival companies in the business of building smartphones.

Rejection A and Rejection D are based on prior art considerations, one from PCT Publication No. WO 03/081458 on "controlling content display," by AOL/Luigi Lira, published on October 2, 2003 and U.S. Patent No. 7,786,975 on a "continuous scrolling list with acceleration," with named inventors Bas Ording, Scott Forstall, Greg Christie, Stephen O. Lemay and Imran Chaudhri.

A finding of anticipation means no inventive step was found between the prior art and Apple's '381 patent claims. The company must now prove to the patent office, or the appeals court that the IP was both new and its claimed inventive step is tenable.

Judge Koh is currently hearing so-called Rule 50 motions, or those that overrule jury decisions, from Samsung and Apple. The USPTO's non-final finding may play a role in her decision regarding the devices affected by the '381 patent, and if a final Office action comes in invalidating the claims, the patent could be unenforceable.

As Mueller notes, however, Apple has a chance to persuade the patent office as more than on non-final Office action can be reached, and final Office action can be reconsidered by the Central Reexamination Division. The last decision by the division can then be appealed to the Board of Patent Appeals and Interferences, and that outcome can be appealed to the U.S. Court of Appeals for the Federal Circuit. Finally, a Federal Circuit decision can be appealed to the Supreme Court, though the matter is unlikely to reach such extremes.

As for Samsung, the Korean company already developed a workaround to the overscroll bounce patent, but if the invention were to be found invalid, it is probable that the feature would make a return to handsets sold in the U.S.

Isn't there some protection from cases like this, where you've successfully litigated a patent? It seems almost criminal to invalidate a patent like this, retroactively causing a successful lawsuit to be turned into somewhat of a humiliating "you win, no wait, you lose" type situation.

Oh for god sakes, it seems patents are nigh on useless. What is the point in innovating when some asshole company can just copy your every move without the R&D costs. What a stupid world we appear to live in.

The US patent office issued the patent , if anyone should be liable for damages it should be the US patent office. Why should they be allowed to issue patents , let companies spend millions defending an issued patent and then say oh sorry we made a mistake you cant have that patent.

Can someone with a legal background comment on this? At the time of trial, the patent was valid, and Samsung did not challenge its validity. Do the verdict regarding the claims in this patent still stand?

From my understanding the USPTO does not validate any patent request against prior art. It only needs to be specific enough etc. Any prior art should be investigated by the applicant (and thereby the applicant takes the risk). It actually states somewhere that any prior art validation will be left to ligitation

Can someone with a legal background comment on this? At the time of trial, the patent was valid, and Samsung did not challenge its validity. Do the verdict regarding the claims in this patent still stand?

Actually, the jury needed to validate the patent agains prior art as well (as brought to the case by Samsung). But that fantastic head of the jury convinced everyone that prior art was a non-issue and they just needed to determine infringement and damages.

This is like a football team winning by a couple of touchdowns, only to read in Monday's newspaper that they lost because the Rules Committee decided that morning that all rushing touchdowns are invalid. Not only do you not win that game, but you are no longer in the playoffs, and your investment in a rushing attack was wasted.

It may be the law, and business as usual, but it still seems wrong that the organization that gave you the green light, turns around and gives you a ticket for moving forward with the patent. I would like to know on what basis it was deemed invalid? Which sifi/fantasy show did this patent in, and on the basis of such things, can any patent issued by this office mean anything?

Apple has no competition. Every commercial product which competes directly with an Apple product gives the distinct impression that, Where it is original, it is not good, and where it is good, it...

This is like a football team winning by a couple of touchdowns, only to read in Monday's newspaper that they lost because the Rules Committee decided that morning that all rushing touchdowns are invalid. Not only do you not win that game, but you are no longer in the playoffs, and your investment in a rushing attack was wasted.

That is completely off the mark. Patent invalidation ≠ changing the rules or the law

It's more than time that USPTO starts thinking hard about the patents they grant. Ideally they should do that before they grant them. Note that the same people here that went agressive on foreign courts that did not see Samsung as "scum" suddenly seem to change their mind about the USPTO...

In the meantime, I've just gotten a Nexus 7 and I'm playing with it, but I hope the iPad Mini rumor turns into glass and aluminum fast, because I also want one

Social Capitalist, dreamer and wise enough to know I'm never going to grow up anyway... so not trying anymore.

The US patent office issued the patent , if anyone should be liable for damages it should be the US patent office. Why should they be allowed to issue patents , let companies spend millions defending an issued patent and then say oh sorry we made a mistake you cant have that patent.

not good enough !!!

Approx half of all patents are found invalid in whole or part when challenged either by reexamination by the PTSO or in litigation. Nothing unusual about this one meeting that fate. A recent article here at AI said that Apple knows some of what it attempts to file for may not be patentable, yet they go for it anyway.

Isn't there some protection from cases like this, where you've successfully litigated a patent? It seems almost criminal to invalidate a patent like this, retroactively causing a successful lawsuit to be turned into somewhat of a humiliating "you win, no wait, you lose" type situation.

So you're saying that if the USPTO wronged Samsung and a court, based on the USPTO patent, in turn wronged Samsung, Apple should rightfully be allowed to wrong Samsung?

Seems to not make much sense, at least to me.

The USPTO made a mistake, a court made a decision based on that mistake, the USPTO corrects that mistake, so yes, it should be normal that you can overturn the court decision.

Imagine that you have been wrongly convicted for murder based on forensics analysis, and new science developments prove you were innocent. Should you be kept in prison because "you win, no wait, you lose" is humiliating to the real criminal? I don't think so.

Social Capitalist, dreamer and wise enough to know I'm never going to grow up anyway... so not trying anymore.

Very strange. I read the other patents in question and I see nothing that describes the "rubber banding" effect or specifically the "inertial scroll". Instead the patents refer vaguely to applying acceleration or deceleration in scrolling, but is far too vague to make Apple's specific claims invalid. In addition, much of Lira and Ording is covered by prior art with other UI patents. Pretty fishy waters.

From my understanding the USPTO does not validate any patent request against prior art. It only needs to be specific enough etc. Any prior art should be investigated by the applicant (and thereby the applicant takes the risk). It actually states somewhere that any prior art validation will be left to ligitation

That's not completely true. The USPTO examiner may find prior art on his or her own. This is necessary because Joe Public can submit an application without researching any prior art, and there will be too many patents granted that will have to be invalidated when challenged. Having said that, the typical examiner may spend at most a few days in total, and cannot be relied on to find all possible related prior art. A good patent application will mention all relevant prior art that would allow the examiner to start at a good place.

Quote:

Originally Posted by mausz

Actually, the jury needed to validate the patent agains prior art as well (as brought to the case by Samsung). But that fantastic head of the jury convinced everyone that prior art was a non-issue and they just needed to determine infringement and damages.

I don't know that you can blame the head of jury for this (maybe?), although he did talk too much.

The re-examination of this patent was requested by an anonymous party back in May, independent of this court case. This happens often. I recall Samsung itself mentioning that reexamination was happening during the course of the trial. The fact is that the jury of this trial did not invalidate any of the Apple or Samsung patents (~ 15 of them?). According to Florian Mueller, that is incompatible with statistical norm and therefore he foresaw this happening.

Approx half of all patents are found invalid in whole or part when challenged either by reexamination by the PTSO or in litigation. Nothing unusual about this one meeting that fate. A recent article here at AI said that Apple knows some of what it attempts to file for may not be patentable, yet they go for it anyway.

Half? Is it that high? Do you have a credible reference for this? Thanks.

Half? Is it that high? Do you have a credible reference for this? Thanks.

Of course I do.

I was coming back to correct my original comment as it's actually even higher than that. I was remembering only the percentage trimmed back or tossed altogether by litigation.

"Several empirical studies have attempted to track the percentage of litigated patents that the courts conclude the USPTO improvidently granted. One study conducted by John R. Allison, a member of the University of Texas business school faculty, and Mark A. Lemley, a member of the Stanford Law School faculty, concluded that courts hold 46% of patents litigated to a final judgment to be invalid. Other studies have reported results broadly consistent with the Allison & Lemley research."

But the patent failure rate on PTSO reexaminations may be as high as 75%.

"Historically, inter partes reexaminations have a higher probability of invalidating a patent than ex parte reexaminations, presumably because the requester can submit arguments and evidence against the patent during inter partesreexaminations. In ex parte reexaminations, about 30 percent of the patents are affirmed (the patent has been found valid over the submitted prior art), 10 percent of the patents are invalidated, and 60 percent of the patents survived with reduced patent scope. Approximately 500–600 requests for ex parte reexamination are filed each year. In inter partesreexaminations, about 8 percent of the patents are affirmed, 75 percent of the patents are invalidated, and 17 percent of the patents survive with reduced patent scope. Only a small number of inter partes reexaminations have been concluded because they were first introduced in 1999 and are still relatively new. Moreover, only patents filed on or after November 29, 1999, are eligible for inter partes reexamination. Thus, historical statistics for inter partes reexaminations might not be as reliable. "

Rejection A and Rejection D are based on prior art considerations, one from PCT Publication No. WO 03/081458 on "controlling content display," by AOL/Luigi Lira, published on October 2, 2003 and U.S. Patent No. 7,786,975 on a "continuous scrolling list with acceleration," with named inventors Bas Ording, Scott Forstall, Greg Christie, Stephen O. Lemay and Imran Chaudhri.

Very strange. I read the other patents in question and I see nothing that describes the "rubber banding" effect or specifically the "inertial scroll". Instead the patents refer vaguely to applying acceleration or deceleration in scrolling, but is far too vague to make Apple's specific claims invalid. In addition, much of Lira and Ording is covered by prior art with other UI patents. Pretty fishy waters.

Inertia and acceleration/deceleration are highly related. Remember high school physics?

The US patent office issued the patent , if anyone should be liable for damages it should be the US patent office. Why should they be allowed to issue patents , let companies spend millions defending an issued patent and then say oh sorry we made a mistake you cant have that patent.

I was coming back to correct my original comment as it's actually even higher than that. I was remembering only the percentage trimmed back or tossed altogether by litigation.

"Several empirical studies have attempted to track the percentage of litigated patents that the courts conclude the USPTO improvidently granted. One study conducted by John R. Allison, a member of the University of Texas business school faculty, and Mark A. Lemley, a member of the Stanford Law School faculty, concluded that courts hold 46% of patents litigated to a final judgment to be invalid. Other studies have reported results broadly consistent with the Allison & Lemley research."

But the patent failure rate on PTSO reexaminations may be as high as 75%.

"Historically, inter partes reexaminations have a higher probability of invalidating a patent than ex parte reexaminations, presumably because the requester can submit arguments and evidence against the patent during inter partesreexaminations. In ex parte reexaminations, about 30 percent of the patents are affirmed (the patent has been found valid over the submitted prior art), 10 percent of the patents are invalidated, and 60 percent of the patents survived with reduced patent scope. Approximately 500–600 requests for ex parte reexamination are filed each year. In inter partesreexaminations, about 8 percent of the patents are affirmed, 75 percent of the patents are invalidated, and 17 percent of the patents survive with reduced patent scope. Only a small number of inter partes reexaminations have been concluded because they were first introduced in 1999 and are still relatively new. Moreover, only patents filed on or after November 29, 1999, are eligible for inter partes reexamination. Thus, historical statistics for inter partes reexaminations might not be as reliable. "

[quote]"Half of all patents are invalid" is not the same half of all re-examined patents being invalidated. Are you sure you know what you are saying?[/quote] Yeah I know, but Google is so amazing it automatically knows what I mean :D

It was reported in May that an anonymous request to reexamine the '381 patent, along with Apple's U.S. Patent No. 7,479,949 for touchscreen heuristics. At the time, it was thought that Android maker Google lodged the request, however it could have been any number of rival companies in the business of building smartphones.

It was almost certainly Google, accompanied by a significant lobbying effort directed at the PTO. It's got Google written all over it.

Better watch out Google, more than one company can play the "anonymous" patent re-examination game. It'd be a shame if suddenly a massive amount of Google patents started getting this. Starting with those nice juicy ones you paid all those Billions for.

Better watch out Google, more than one company can play the "anonymous" patent re-examination game. It'd be a shame if suddenly a massive amount of Google patents started getting this. Starting with those nice juicy ones you paid all those Billions for.

There's absolutely no doubt some percentage of those are invalid in whole or part just as Apple's are. But even an eventually "invalid" patent can work to slow down the competition if it hasn't yet been ruled on, which is all that's needed much of the time. Personally I think that's the sole intent of some of these claims, with the company holding the IP realizing there's validity issues with it if challenged.

There is no functional value of the bounce. It is just lazy for Android designer to copy most features on iPhone without even thinking about it. This has no bearing on whether there is a patent or not on this feature. Just as an example, when Apple redo the map, the grass look greener and less pastel than the Google Map.

Apple is of course free to bring another suit using that patent's claims. So far Apple's never used that one in litigation AFAIK, so the validity of it hasn't yet been challenged. It might come out unscathed. . . or not.

Wow, wonder if Apple will ever get that billion. In the real world the more Apple litigates the more free publicity Samsung gets and the more sales went up for the Galaxy S3. Let go of the anger and move on. If Apple has the best products they will stay on top.

What do you need him for? He only shows up first when it's good for Apple anyway. Everyone's favorite shill explained it pretty well and clearly on his blog this morning, even if the last paragraph shows his biased colors straight through.

First off, people always claim patent examiners lack the skills or knowledge to be able to grant technical or software patents. Using the same logic, how can they now be skilled enough to invalidate a patent? This is nothing more than the USPTO saying "Apple, the ball's in your court - you have to spend the time & money to prove this patent is valid - we're not going to do the work for you."

As to the previous posts about most patents being invalidated, where's the breakdown? There's no way companies like IBM, Microsoft or Apple (with their highly skilled patent attorneys and legal departments) are going to have the same rate of invalidation as small companies or individuals. Without a breakdown the study is absolutely worthless.

I'd like to remind everyone about Microsoft and their FAT patent. First it was granted, then a huge lobby of companies and organizations protested and asked for re-examination. The USPTO invalidated several patents, MS appealed and a couple years later they were validated and remain valid to this date.

Several courts and judges around the world in different jurisdictions have found this patent to be valid. If Apple had a 50:50 success rate then you could imply their success at getting this overturned would also be 50:50. Since they've been successful with this patent in front of numerous judges, I think the odds of Apple having this patent validated (permanently) is going to be quite good.

Finally, the amount of damages Samsung was awarded was due to several design and technical patents. Even if they took out damages for this patent while waiting for things to reach a final decision, it would only represent a small portion of the judgement. So for the haters who think Samsung is going to get out of paying anything because of a single patent, well, it's nice to dream, isn't it?